Thursday, February 05, 2009

Precedential No. 2: TTAB Rules That, For a Multi-Class Registration, Fraud Must Be Considered Class-by-Class

The Board has now addressed one of the open issues concerning fraud, ruling that with regard to a multi-class registration, fraud committed in fewer than all the classes requires cancellation as to only those classes, and not as to all classes in the registration. Last March, the Board said the same thing in dictum in Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008) [precedential] [TTABlogged here], but now it's official. G&W Laboratories, Inc. v. G W Pharma Limited, 89 USPQ2d 1571 (TTAB 2009) [precedential].

In this Section 2(d) opposition, Opposer Labs relied on two registrations for the mark G & W, each registration including two classes: class 5 (suppositories and the like) and class 35 (distributorships in the field of suppositories and the like). Applicant GW Pharma counterclaimed for cancellation of the two registrations in their entireties on the ground of fraud, alleging that Labs had never used the marks on the class 35 services.

After the counterclaim was filed, Opposer Labs filed the requisite Section 8 Declaration for each of the registrations, but it deleted the class 35 services. Labs then moved to dismiss Pharma's counterclaims as to class 35 as moot, and as to class 5 as failing to state a claim upon which relief may be granted. Pharma countered that its fraud claim as to class 35 is not moot because one cannot cure fraud by deleting goods from a Section 8 declaration, and that its class 5 fraud claim is proper because, according to Pharma, fraud in one class requires cancellation of the entire registration.

The Board denied Labs' motion to dismiss the class 35 fraud claim as moot: "It is settled that fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit."

As to class 5 fraud claim, however, the Board granted the motion to dismiss, finding Pharma's theory to be incorrect: "The line of cases to have considered fraud since Medinol has involved single class applications or registrations. These cases have consistently held that fraud as to any goods or services in a single class will lead to a finding that the application or registration is void in the class in which fraud has been committed." But the Board has "not had occasion to consider whether fraud in less than all classes of a multiple-class registration will subject the entire registration to cancellation for fraud."

The Board reasoned that a multi-class registration is like a series of one-class registrations:

"An applicant for a trademark registration may file for registration in more than one class by filing a single application. See Trademark Rule 2.86. Such an application requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration. Id. Thus, a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead."

The Board therefore held that that "each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration."

Consequently, the Board dismissed Pharma's counterclaim as to the class 5 goods, granted the counterclaim as to the class 35 services, and re-set the testimony dates.

Text Copyright John L. Welch 2009.


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